IP Licence Agreement Solicitors
We review, draft and negotiate licence agreements for both licensees and licensors. It can be a false economy to skip the review stage as opportunities are easily lost which are difficult to recover. Our goal is to achieve the best outcome.
Types of IP licences we advise on
Our solicitors experience includes :-
- Intellectual Property Rights (IPR) licence contracts
- Design rights licences
- Product licence contracts
- Trademark licences
- End user licence agreements
- Software licensing agreements
- Sub-licence agreements
- Merchandising and retail licence agreements
- Music and artwork licence agreements
- Disputes over licensing contracts
Working with us
We are a specialist legal firm for intellectual property and media licence agreements bringing to you benefits which include:
- We have probably dealt with similar issues before. We can consider the surrounding structure in which the licence will operate.
- We act for businesses of all sizes. We find clients of the larger law firms are attracted to us because they know they will be welcomed by us and receive better value for money.
Managing your licence agreement
Based on the issues we see arising in real life we have explained below for you pointers which are useful.
- Identifying avoidable risks under licence agreements;
- Licence agreement checklist for negotiation;
- Issues that can make or break the deal.
Licence agreements – avoidable risks
The biggest risks, all avoidable if dealt with in time, include:
- You find you are locked into unintended obligations;
- You are exploited, as you give away more rights than the licence fee/royalty warrants;
- You are restricted by the scope and duration of the licence; and/or
- You find restrictions impede use and enjoyment of the product licensed.
Successful businesses define their licensing strategy. They enter into negotiations prepared. We can help you plot your path.
Licence agreement checklist for negotiation
We see clients benefit from thinking through the following:
1. Ownership rights under the licence agreement
Licence agreements can extend to all forms of intellectual property including copyright, patents, know-how, trade marks, media and image rights, design rights or trade secrets. Bolting down your ownership of the IP before the licence agreement is signed is obviously key.
Often licensees request the right to modify technology and software code. It is important to decide which party owns the modifications.
Have you thought about who owns the IP in any enhancements? Consider negotiating who owns IP enhancements to stop them slipping through your grasp.
2. Safeguards to consider under the licence agreement
There are a variety of ways to safeguard the underlying value of the technology or product being licensed.
Consider negotiating for:
- Restricted use to preserve the opportunity to seek new revenue streams;
- Robust enforcement powers in the event that the value of your technology or product is threatened. Without deterrent your risk is increased.
3. Pricing for IP licences
The licence fee/royalty structure will depend on the exclusivity of the licence, exposure to risk, product liability and support offered for the licensee. There are a variety of licence agreement models to think about:
- Some licence models work on a commission based on revenue generated by the licensee. Commission based licence fees do require thinking about as monitoring sales has to be transparent.
- Other licence models work on usage. Review clauses are useful to allow the licence fee to be tailored to the actual usage.
- Flat fees are attractive but in competitive markets the users may demand more sophistication.
- Many licence agreements come with helpdesk and technical support. The cost can be wrapped up into the licence fee or charged as a separate price point. Service level agreements are often used in connection with technical support.
- Hosting is becoming another consideration as more software is operated on cloud platforms. A cloud computing service can be offered on a “pay-as-you-go” or “pay-per-use” cost structure.
- If your technology or product involves the use of personal data you will have data protection issues and hence costs to consider.
- If your technology is combined with other technology and sold as a combined product.
There is a balance to be drawn based on whether you are the licensor or licensee. The licensor will be looking to contract for some discretion and licence fee pricing flexibility. Whereas often the user will want a more rigid licence fee pricing structure.
- Costing needs to reflect the region(s) licensed.
- Once the licence agreement is in place often your flexibility to alter the pricing model goes. Consider reserving the right of review. This is especially important if you are licensing a new product.
- Liability is usually split into that required under statue for the particular product and that offered voluntarily. The costing for quality control checks is part of the negotiation.
- Provide for the ability to both add and remove resources, with a corresponding upward and downward adjustment of the service fees. This is particularly important for hosting agreements.
- Ability to negotiate rates for incremental and decremental use.
- Lock in any recurring fees for a period of time.
4. Licence scope
If your product is under development you will want to keep new markets open to you and not your competitors.
You should think about:
- Whether you want to grant an exclusive, sole or non-exclusive licence.
- Geographical scope- do you want to licence your technology, software or product in one or more countries or worldwide?
- What rights you want to afford to the person licensing your product- are they allowed to develop it or just use it?
The scope can be limited under a licence agreement. But this is usually a bespoke feature prepared around your product and marketplace.
5. Warranties and indemnities under the licence agreement
Warranties and indemnities in your licence agreement usually come into play if someone considers that you are infringing their copyright, trade-mark or other forms of intellectual property. You may find yourself threatened with an infringement claim which needs dealing with.
- If you want to stop your technology or IP sold under licence being used to build competing applications – the permitted uses will need to be well documented in the licence agreement.
- If you want to limit the regions or areas in which the licence can be used – make sure this is documented.
- Limit performance warranties as performance of technology is often based on many factors outside the control of the licensor.
6. Licence agreement terms
The important terms for you will depend upon whether you are the licensee or licensor, your negotiation power and a host of other factors.
Suggested negotiation points:
Based on past experience core negotiation points revolve around:
- How long will the licence last for;
- Breach of terms;
- Variation of terms;
- Loss of intellectual property ownership;
- Repercussions from
- Early termination,
- Failure to pay licence fee/royalties,
- Insolvency, and
Key issues and clauses in an IP or media rights licence agreement
- Users: can the licensee sub-licence the licence?;
- Assignment: who can the licence be assigned to?;
- Enhancements: are modifications permitted and who undertakes them?;
- Pricing and support: always important.
If you need advice on an intellectual property contract, we hope you have picked up from the above that John Deane is a highly experienced and practical lawyer. Get in touch with John to discuss your circumstances.